Ex Parte Meissner et al

Patent Trial and Appeal Board

Apr 26, 2017

12820942 (P.T.A.B. Apr. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/820,942 06/22/2010 Friedrich MEISSNER H01.2-14908-US01 3033
490 7590 04/28/2017
VIDAS, ARRETT & STEINKRAUS, P.A.
Richard A. Arrett
9531 West 78th Street
Suite 400
Eden Prairie, MN 55344
EXAMINER
SU, CHWEN-WEI
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
04/28/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@vaslaw.com
rleaf@vaslaw.com
rarrett @vaslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRIEDRICH MEISSNER, STEFAN LUEDEMANN,
and JANNAEVE
Appeal 2015-007318
Application 12/820,942
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Friedrich Meissner et al. (Appellants)1 appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—3, 5, 6, 8, and 9. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Fette GmbH. Appeal
Br. 2.
Appeal 2015-007318
Application 12/820,942
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A compression punch for a rotary press, with a shaft (12), a
punch head (14) disposed at one shaft end and a compression
zone disposed at the other shaft end, wherein the punch head (14)
features an upper mirror surface (16), an outer cylinder surface
(18) and a curved transition zone (20) between the mirror surface
(16) and the cylinder surface (18),
characterized in that the mirror surface (16) and the
transition zone (20) form a three-dimensional surface, whose
course in at least one radial direction can be described by a
mathematical function (30) whose second derivative is
continuous, and
further characterized in that the radius of curvature of the
three-dimensional surface decreases continuously in the radial
direction from the mirror surface (16) to the cylinder
surface (18).
REJECTIONS
I. Claims 1—3, 6, 8, and 9 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Schikowski (US 2009/0269433 Al, pub. Oct.
29, 2009).
II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Schikowski and International Standard ISO
18084, Press tools for tablets —Punches and dies, 2005
(“ISO”).
III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Schikowski and Hinzpeter (US 5,699,273,
iss. Dec. 16, 1997).
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Application 12/820,942
DISCUSSION
Each of claims 1—3, 5, 6, 8, and 9 recites, in relevant part, that “the
radius of curvature of the three-dimensional surface decreases continuously
in the radial direction from the mirror surface (16) to the cylinder surface
(18).” Appeal Br. 14—15 (Claims App.). Appellants argue that Schikowski
fails to disclose such a limitation. See id. at 8—11; Reply Br. 2-4. In
particular, Appellants assert that the limitation “decreases continuously”
requires that “the radius of curvature continuously changes.” Appeal Br. 8
(emphasis omitted). According to Appellants, Schikowski discloses, in
contrast, “two transition areas 22 and 24 ..., each of which notably has a
fixed radius (2.5 mm radius in transition area 24 and 10 mm radius in
transition area 22).” Id. (emphasis omitted); see also Reply Br. 3 (asserting
that “the decrease [in Schikowski’s radius of curvature] is not continuous,
but[,] rather[,] the decrease is an abrupt step change at a single point (the
juncture between transition areas 22 and 24)” (emphasis omitted)). For the
reasons that follow, Appellants’ argument is persuasive of error in the
rejection.
The Examiner finds that Schikowski discloses that “the radius of
curvature of the three-dimensional surface decreases continuously in the
radial direction from the mirror surface to the cylinder surface, from the
10 mm to 2.5 mm.” Final Act. 3 (citing Schikowski, Figs. 1, 2; para. 22).
The Examiner clarifies in the Answer that Schikowski’s radius of “curvature
decrease[s] continuously since there is no interruption,” and, specifically,
“the curvature does not increase first then decrease.” Ans. 5. In other
words, according to the Examiner:
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Application 12/820,942
As long the radius of the last segment (the one nearest to the
cylinder surface) is smaller than the one of first segment (the one
nearest to the mirror surface), and there are no measurements
between them showing the radius of the curvature is larger than
the one of first segment or smaller than the one of the last
segment, then the radius is decreasing continuously.
Id.
We agree with Appellants that “the Examiner has improperly
interpreted the recitation ‘decreases continuously’ to mean non-increasing
(which includes both decreasing and remaining constant).” Appeal Br. 10.
In particular, a person having ordinary skill in the art would understand from
the description in the present application that “decreases continuously”
means that the radius of curvature continuously changes such that it becomes
smaller at each point along the three-dimensional surface in the radial
direction from mirror surface 16 to cylinder surface 18, and does not remain
constant. See, e.g., Spec. 2,1. 34—3,1. 7 (describing “that the noise emission
and the wear occurring in the state of the art are caused by an unfavourable
. . . non-uniform interaction between the compression rollers and the punch
heads” because “the transition zone itself, and its run-out into the mirror
surface in particular, feature sudden changes of radius”); id. at 3,11. 13—15
(“according to the present invention[,] there are no jumps of radius in the
transition zone and in the mirror surface, and in particular none in the region
of the run-out of the transition zone into the mirror surface”).
Schikowski discloses that “first transition area 22 with a radius of
10 mm is provided between mirror surface 16 and the cylinder surface 20,”
and “[ajnother transition area 24 has a radius of 2.5 mm.” Schikowski, para.
22; see also id., para. 23 (describing “[t]he two radii of the transition areas
22 and 24”). Although we agree with the Examiner that Schikowski
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Application 12/820,942
discloses a decrease in the radius of curvature in the radial direction from
mirror surface 16 to cylinder surface 18 (i.e., from 10 mm in transition area
22 to 2.5 mm in transition area 24), we discern no disclosure in Schikowski
as to the radius of curvature continuously changing in the radial direction
such that it becomes smaller at each point along the surface of transition
areas 22 and 24. As such, the Examiner’s finding that Schikowski discloses
a three-dimensional surface having a radius of curvature that decreases
continuously in the radial direction lacks adequate evidentiary support.
For at least the above reason, the Examiner fails to establish by a
preponderance of the evidence that Schikowski anticipates the subject matter
of claims 1—3, 6, 8, and 9. Accordingly, we do not sustain the rejection of
independent claims 1—3, 6, 8, and 9 under 35 U.S.C. § 102(e) as anticipated
by Schikowski.
In the rejections of claims 5 and 8, each of which depends either
directly or indirectly from claim 1, under 35 U.S.C. § 103(a), the Examiner
does not rely on ISO or Hinzpeter for any teaching, or articulate any
additional findings or reasoning, that would remedy the aforementioned
deficiency in the disclosure of Schikowski. Accordingly, we do not sustain
the rejections of claims 5 and 8 under 35 U.S.C. § 103(a).
NEW GROUNDS OF REJECTION
We enter the following new grounds of rejection of claims 1—3, 5, 6,
8, and 9 pursuant to 37 C.F.R. § 41.50(b).
Written Description
Claims 1—3, 6, 8, and 9 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
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Application 12/820,942
The fundamental factual inquiry for ascertaining sufficient written
description is whether Appellants’ Specification conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, Appellants
were in possession of the invention as presently claimed. See Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc); Vas-
Cathlnc. v. Mahurkar, 935 F.2d 1555, 1562—64 (Fed. Cir. 1991). “[The
possession] inquiry, as we have long held, is a question of fact” and “the
level of detail required to satisfy the written description requirement varies
depending on the nature and scope of the claims and on the complexity and
predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citations
omitted). “[T]he specification must describe an invention understandable to
that skilled artisan and show that the inventor actually invented the invention
claimed.” Id.
Here, independent claims 1 and 6 recite, in relevant part, “that the
mirror surface (16) and the transition zone (20) form a three-dimensional
surface, whose course in at least one radial direction can be described by a
mathematical function (30) whose second derivative is continuous.” Appeal
Br. 14, 15 (Claims App.). Claims 2, 3, 5, 8, and 9 incorporate all the
limitations of claim 1, including, in pertinent part, the above limitation. Id.
Appellants’ Specification, however, does not provide adequate written
description support for “a mathematical function” (i.e., singular), whose
second derivative is continuous, that describes the three-dimensional surface
formed by transition zone 20 and mirror surface 16.
In particular, the Specification describes that “punch head 14 has a
mirror surface 16 that is flat at the upper side and circular in the top view,”
and, “[bjetween the cylinder surface 18 and the mirror surface 16, there is a
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Application 12/820,942
curved transition zone 20.” Spec. 5,11. 25—28. “In the shown example, the
mirror surface 16 and the transition zone 20 form a three-dimensional curved
surface, whose course in an arbitrary radial direction of the punch head 14 is
described by a mathematical function that is continuous in its second
derivative.” Id., 11. 28—31. The Specification also describes, with reference
to Figure 2, that “a mathematical function f(x) is shown at reference sign 30,
which depicts the two-dimensional course of the transition zone 20 up to the
mirror surface 16 in an arbitrary radial direction.” Id. at 6,11. 8—10
(emphasis added). The Specification also describes that, “[a]bove the values
of the x-axis shown in Fig. 2, the function 30 may then be defined as being
constant[,] e.g., so that it maps the plane mirror surface.” Id., 11. 15—16.
According to the Specification, “the second derivative f'(x) of the function
f(x) is represented in dashed lines at reference sign 34 in Fig. 2,” and “[i]t
can be recogni[z]ed that the second derivative f'(x) of the function f(x) is
continuous.” Id., 11. 23—25.
In other words, Appellants’ Specification characterizes the three-
dimensional surface formed by mirror surface 16 and transition zone 20, in
the example shown (in which mirror surface 16 is a plane mirror surface),
both as being described by a function whose second derivative is continuous
(see id. at 5,11. 28—31) and as being described by a first function fx), whose
second derivative is continuous only “up to the mirror surface 16,” with the
function over the remainder of said surface being a constant (see id. at 6,
11. 8—16). Given this discrepancy, the disclosure does not describe an
invention understandable to the skilled artisan and show that Appellants
actually invented the invention claimed.
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Inasmuch as the Specification does not identity a (single) function,
whose second derivative is continuous, that describes the three-dimensional
surface forming both the mirror surface and transition zone, the
Specification does not convey that Appellants were in possession of the
claimed invention. Moreover, the fact that the language contained in the
claims before us may have been recited in the original claims in the
application on its filing date does not make up for the aforementioned
deficiency in Appellants’ written description. An original claim does not
necessarily satisfy the written description requirement. Ariad, 598 F.3d at
1349. Merely by way of example, a functional claim that simply claims a
desired result without describing species that achieve that result is
insufficient, by itself, to satisfy the written description requirement. Id.
Similarly, in the present case, a claim that simply claims a three-dimensional
surface formed by a mirror surface and a transition zone and described by a
function whose second derivative is constant is insufficient, by itself, to
satisfy the written description requirement, when the only example of a
surface disclosed in the Specification as purportedly satisfying those
requirements, is not described by a (single) function whose second
derivative is constant.
For these reasons, Appellants’ disclosure does not adequately convey
to those skilled in the art that, as of the filing date sought, Appellants had
possession of the subject matter of claims 1, 3, 5, 6, 8, and 9.
Indefiniteness
Claims 1—3, 6, 8, and 9 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
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Application 12/820,942
Claims, when read in light of the specification, must “reasonably
apprise those skilled in the art both of the utilization and scope of the
invention” using language “as precise as the subject matter permits.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). In determining whether a
claim is definite under 35 U.S.C. § 112, second paragraph, “[t]he USPTO, in
examining an application, is obliged to test the claims for reasonable
precision according to [this principle].” Id.
As discussed above in the rejection under 35 U.S.C. § 112, first
paragraph, Appellants’ Specification characterizes the three-dimensional
surface formed by mirror surface 16 and transition zone 20, in the example
shown (in which mirror surface 16 is a plane mirror surface), both as being
described by a function whose second derivative is continuous (see id. at 5,
11. 28—31) and as being described by a first function fix), whose second
derivative is continuous only “up to the mirror surface 16,” with the function
over the remainder of said surface being a constant (see id. at 6,11. 8—16).
This discrepancy creates an ambiguity as to what is meant by the limitation
in claims 1 and 6 “that the mirror surface (16) and the transition zone (20)
form a three-dimensional surface, whose course in at least one radial
direction can be described by a mathematical function (30) whose second
derivative is continuous.” Consequently, the claims are indefinite because
they do not reasonably apprise those of skill in the art of the scope of the
claimed invention.
DECISION
The Examiner’s decision rejecting claims 1—3, 5, 6, 8, and 9 under 35
U.S.C. §§ 102(e) and 103(a) is REVERSED.
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We enter NEW GROUNDS OF REJECTION of claims 1-3, 5, 6, 8,
and 9 under 35U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and under 35 U.S.C. § 112, second
paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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